Intellectual Ventures I LLC v. AT&T Mobility LLC, et al., C.A. Nos. 12-193 – LPS; 13-1631 – LPS; 13-1632 – LPS; 13-1633 – LPS; 13-1634 – LPS; 13-1635 – LPS; 13-1636 – LPS; 13-1637, June 2, 2016.

Stark, J. Court rules after in camera review of documents withheld on the basis of privilege.

Of eight disputed documents, six were found to be privileged. These include documents reflecting:

  1. work conducted by one of Plaintiffs' engineers containing legal advice provided by one of Plaintiffs' attorneys based on assessments of patent strength and scope;
  2. a draft presentation containing legal advice and reflecting counsel's analysis of the scope of the claims of certain patents;
  3. a presentation prepared by an employee of Plaintiffs, containing legal advice from counsel, and analyzing the scope of patent claims and possible infringement (including by mapping claim elements onto another entity's products);
  4. a draft presentation prepared by an employee of Plaintiffs, containing legal advice from counsel and reflecting the scope of patent claims and a broad assessment of the likelihood that identified products/standards infringe;
  5. a draft presentation prepared by an employee of Plaintiffs ,reflecting legal advice from counsel (including with respect to the strength and breadth of patent claims), and disclosing settlement negotiation strategy relating to the instant litigation;
  6. a draft presentation prepared by an employee of Plaintiffs, containing legal advice from counsel, including with respect to assessment of the scope of patent claims (and how they compare to another entity's products) and prosecution strategy.

The following two documents were found to be not privileged:

  1. a document, even if reflecting counsel's legal assistance, consisting largely if not entirely of factual, publicly-available information about certain patents;
  2. a list of patents prepared by a non-lawyer and displaying factual information such as titles, expiration dates, and to whom the patents were presented.